Module 1

The aim of the International conventions on IPR is to standardize and streamline and
regional registration procedures. This is achieved through the simplification and
harmonization certain features of those procedures , thus making IPR applications and
the administration of registrations in multiple jurisdictions less complex and more
predictible.

1. Paris Convention
2. Madrid agreement and protocol
3. TRIPS agreement and minimum International standuards for trade marks
4. The Berne convention for the protection of literary and Artistic works
5. The universal copyright Convention
6. Patent co operation Treaty

1. Paris convention: is all about all different types of IP not just one type of IP. Two
noteable principles:
1. Principle Nationaltreatment-
2. Right of Prioprity - putting something first or first come first serve.

Madrid system
The madrid protocol for the worldwide recognition of trademark, is the essential global
framework for encouraging the enrollment of trademarks. The process by which an
international registration may be defeated for all countries in which it is protected, by
means of a single invalidation or revocation action against the basic registration has
become generally known by the term “central attack”.

Central attack : means within 5 years if the domestic trademark application is rejected
then even the international trademark will also be rejected.

Problems of madrid agreement:

1. Refusal time of 12 months
2. No remedy for central attack
3. International application any filed in French language
4. Domestic country registration is mandatory
Madrid Protocol

Changes in Madrid Protocol:

1. Remedy time 18 months
2. Protection period 20 years (previously) now 10 years
3. Filing language : French, spanish and English
4. Remedy given for central attack
5. Domestic application can be based of international registration.

TRIPS convention: In this convention they wanted USA and European Union wanted them to
join or become a signatory to the convention. They gave recognition to wines and spirits of
European Union ( geographical Indication and TCE - Traditional Cultrual Expression) and
gave USA IPC.
Brought the commercial aspect to the convention. India became a signatory to the TRIPS
convention in the year 1994.

Berne Convention : took place in the year 1886; it only talks about copyright, the subject
matter was copyright protection. Copyright is creative and original. The convention gives or
lays down a minimum term of protection under copyright ( no renewal).

1. Principle of national treatment

2. Automatic Protection- domestic protection turns into international protection
automatically
3. Independence of Protection- exception to this is term of protection
 Trademark

A trademark can be any word, phrase, symbol, design, or a combination of these things that
identifies your goods or services. It's how customers recognize you in the marketplace and distinguish
you from your competitors. The word “trademark” can refer to both trademarks and service marks.
Example: Amul logo and Netflix

Conventional trademarks like words, symbols, logos, devices, and names have been commonly used
globally. Non-conventional trademarks go beyond conventional trademarks in terms of their nature,
characteristics, and potential. These include both visible marks (colour, shape, holograms, etc.)

Registration of trademark in India

Trademark registration process in India is required if a company/individual intend to possess the
complete ownership of the mark and intend to protect it from the misuse by the third party.
➢Registering a trademark gives the owner exclusive right to use it for its products and/or services.
➢If the trademark registration process is followed smoothly, then the owner can use the symbol that
indicates that specific trademark is registered. The symbol indicates trademarks registration in India
application is filed.

Process of Registration of Trademark

1. Traemark search
2. Filling of application
3. Examination
4. Examination Report
5. Response to Examination Report
6. Publication
7. Oppostion
8. Registration

Conditions for registration

1. Absolute grounds for refusal of registration under section 9

a. It frauds the public or causes confusion
b. There is any matter to hurt religious susceptibility
c. There is an obsecene or scandalous matter.

2. Relative grounds for refusal of registration under section 11

a. Its identity with an earlier trademark and similarity of goods or services
b. its similarity to an earlier trademark and the similarity of goods and there is a probablity of
confusion.
Trademark
Deceptive similarity Case laws :
Collgate vs Anchor
the ‘trade dress’ of goods.

2. M/S Lakme ltd vs M/S Subhash trading

In this matter, the plaintiff was a seller of cosmetic products under the trademark
name ‘Lakme’ and the defendant who was also selling the similar products under the
brand name of ‘LikeMe’. The case of trademark infringment was filed by the plaintiff.
The high court held that the names have not been in a category of deceptive similarity.
These both are two seprate marks with difference in the spelling and apperance.

3. Case: – SM Dyechem Ltd. v. Cadbury (India) Ltd

In this matter, the plaintiff has started a business of selling wafers and chips under
the trademark name “PIKNIK”. Later on the defendant has also started business of
chocolates under the brand name of “PICNIC”. A suit was filed alleging trademark
infringement has been done. The Court held that the trademarks have not been in a
category of deceptive similarity as they are different in appearance and has different
composition of words.
Exclusive rights of trademark owner

1. Rights of unregistered trademark holder or owner:

a. He has acquired goodwill in his trademark
b. The act of the defendant amounts to misrepresntation
c. The claimant has suffered or is likely to suffer damage due to the act of the defendant.

2. Rights of registered trademark holder or owner:

a. Right to alter registered trademark
b. Right to assign
c. Right to exclusive use
d. Right of registered trademark holder of identical trademark
e. Right to seek statutory remedy against an Infringment.

What is use?

•The determination of whether a mark has been continuously used is a matter of fact which
varies from case to case.
•Moreover, with regard to the term “use” the Courts have stated that, the term ”use” does not
necessarily mean and imply actual physical sale and it is now well settled that even mere
advertisement without having even the existence of the goods can be said to be an use of the
mark.
•So for instance, the mark has been registered but hasn’t been manufactured yet,
nevertheless the trademark owner has started to promote the mark by way of advertisements
or TV commercials, which according to the courts, is usage of the mark though the mark
hasn’t been used as such.

What is non-use?

•If the owner of the mark hasn’t used the mark for more than 5 years and 3 months, then
he may lose his trademark rights in such rectification proceedings or opposition
proceedings.

•The onus to prove non-use is on the person who files the application for rectification,
however the onus might be shifted to the trademark owner in the course of hearing and if he
fails to establish usage, his mark will be liable to be removed from the register.
Trademark Infringment Act, 1999
Infringement of trademarks as per Section 29 of the Trademarks Act, 1999 is
defined as a use of a mark, by an unauthorized or an authorized person or a
person who is not the registered proprietor, which is identical or deceptively
similar to the trademark in relation to the goods or services in respect of which
the trademark is registered.

It is defined as the violation of exclusive rights that are attached to a registered

trademark without the permission of the registered owner or licensees. The
courts have time and again assumed that similarity of two marks and the
kind of goods and services results in causing confusion in the minds of
general public. They may take an undue advantage of enjoying the hard-
earned reputation of the registered trademark.

A registered trademark is said to be infringed in case of the following

situation:

●If the mark in dispute is identical with or deceptively similar to the registered
trademark and is in relation to the same or similar goods or services;
●If the identical or similar mark can cause confusion in the minds of general
public to have an association with the registered trademark
●If the registered trademark is used as a part of trade name or business
concern for goods and services in respect of which the trademark is registered
●If the trademark is advertised and as a result it takes unfair advantage or is
contrary to the honest practices or is detrimental to the distinctive character
and reputation of the registered trademark.

Remedies for Trademark Infringement

➢Injunction/stay against the use of trade mark;
➢Appropriate Damages;
➢Handing over of accounts and profits;
➢Appointment of a local commissioner by the respective court for custody or
sealing of infringing material and accounts. The court can even go up to the
extent of granting injunctions and directing the custom authorities to
withhold the infringing material from being shipped or being disposed so that
the proprietary interest of the owner gets protected.
WHAT IS PASSING OFF?
Passing off arises when an unregistered trademark is used by a person
who is not the proprietor of the said trademark in relation to the goods
and services of the trademark owner. It is found on the principle that one
person should not unlawfully enrich himself at the cost of another.

In Durga Dutt vs. Navaratna Pharmaceutical (AIR 1962 Ker 156), the
court set the distinction between passing off and infringement suit.
The action for infringement is a statutory remedy conferred on the
registered owner of a registered Trade mark and has an exclusive right
to the use of the trade mark in relation to those goods. And the passing
off is available to the unregistered goods and services.

Modern Elements of Passing off

In the case Erven Warnink Vs. Townend [(1979) AC 731], Lord
Diplock gave the essential modern characteristics of a passing off
action. They are as follows:
1. Misrepresentation
2. Made by a person in the course of trade
3. To prospective customers of his or ultimate consumers of goods or
services supplied by him.
4. Which is calculated to injure the business or goodwill of another
trader.
5. Which causes actual damage to a business or goodwill of the trader
by whom the action is brought.

Comparitive Advertisment
It is a method of commercialising product by diminishing the other’s
product. There are two types of comparitive advertisment:
Legal - when not writing the name of the product
Illegal - when the product name is shown or advertised

Case law: Balasundaram vs jyothi Laborotores ltd. Certain products are

identified met just by their names but by there characters.
 Character Merchandising : Character merchandising is a promotion technique
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characters are made for drawing the attention of customers. It is a medium by
which a famous personality and the creators of a fictional character or real
character commercially exploit or authorize someone else through third-party
agreements to exploit the personality features like name, image, appearance,
sound, etc. of these characters in relation to some goods or service with a view to
creating in prospective customers a desire to acquire those goods and/or to use
those services because of customers’ likeness to a character.
Patents

Indian Patent Law is defined by various provisions of the Patents Act, 1970. Under this law,
patent rights are granted for inventions covering a new and inventive process, product or an
article of manufacture that are able to satisfy the patent eligibility requirements of having
novelty, inventive steps, and are capable of industrial application. Animals and patents
cannot be patented.

Case law: Diamond vs Chakrabarty

In 1972, a scientist chakrabarty discoverd that a Plasmids bacteria is able to break down
carbon which in turn converts into food for acquatic life. He had done this to save the acquatic
life from oil spills as plasmids injected in bacteria breaks down the carbon element into small
particles whivh makes food for aqua life. So, Chakrobarty wanted to file for a patent so he went
to US Patent office to file for patent but was rejected, then he challanged it and in US supreme
court said that anything and everything invented by the mankind under the sun is a subject
matter of patent.

Aftermath of this case was Onco mouse or Harvard mouse

In this case a group of scholar scientists wanted to test cancer treatment drugs so what they
did was they took a mother mouse and injected her with cancer due to which the babies produced
by the mother mouse are born with the cancer genes so they were able to test their test the cancer
treating drug on the mouse and if it was sucessful then it could be used for humans cancer
treatment, when they tried to file it for patent under USPTO they were rejected they further
applled to the supereme court and were granted the patent.

Filling of the application:

1) Formal details
2) Provisional specification
3) complete specification ( within 12 months) its a broad concept
4) Declaration
These are the four compulsory forms required to be filed for patents
Compulsory lisencing under patent is a limitation of Patent

Surrender of patent lisence means where you give up on the right of the patent
holder, for the greater good of the public at large.
Example: Volvo had given up there patent right saying that every company must
have this iv there vehicle for the safety of the customers, it was for the greater good
of the public at large.

In India, patent protection is granted to the process and product but in USA the
patent protection is only granted to the product.

Food can be patented but people prefer trade secrets like KFC chicken or Pepsi and
COCo cola.
Rights and duties of patent holder after being registered:

Rights ( are exclusive and monopolistic right) :

1. Right to exploit
2. Right to grant lisence ( granting some rights to someone)
3. Right to surrender ( giving up of right for public interest)
4. Right to sue for infringment
5. Right to use and enjoy patent protection

Duties:
1. Duty to disclose ( they have to disclose each and everything on the public
domain)
2. Duty to request examination
3. Duty to respond or clear objection
4. Duty to pay statutory fees.
5. Duty to obligate and follow compulsory licensing

Patent Infringment: Violation of a patentee's right with respect to some

invention is known as patent infringement. When the rights of the patent holder
or the claims in the patent are violated by a third party, without the consent or
license of the patent holder, such third party is said to have infringed the patent
rights of patent holder. While doing a patent infringement risk analysis, it is
necessary to understand the types of patent infringements to ensure that the
invention is not likely to infringe any of the existing patent rights.
Patents Infringment are done either on the process or product, types of Patents
infringment:

1. Direct Infringment- Making, using, selling, trying to sell, or importing

something without obtaining a license from the patent holder is considered direct
patent infringement.

2. Indirect Infringment- Indirect infringement includes contributory

infringement and inducement to infringe a patent. Under these terms, even if a
company isn't the one that originally infringed on the patent, that company can
still be held accountable for patent infringement.

Doctrine of Equi balance : The Doctrine of Equivalents mandates that in the

absence of literal infringement, a product may be found to infringe a patented
product, if it is found to be its substantial equivalent. While Defendant was
asserting that element to element test has to be applied.

3. Literal Infringment- To prove literal infringement, there must be a direct

correspondence between the infringing device or process and the patented device or
process.

4. Non- literal Infringment

Doctrine of colourable Variation : According to the doctrine of colourable variation,

if the infringer makes a slight modification to the patented product or process but,
in fact, takes in substance the essential features of the patented invention, then it
shall constitute patent infringement under the doctrine of colourable variation.

Case law: Lacto phone company vs rolo company

There was a phonogram device that genrates music, inside it had a small device that
would generate the sound, another company came up with a loud speaker which was
bigger in size. The court analysed the initial claim of the parties and realised that
it was smaller device in the phonogram but the other company had made the same
device but in bigger size so it generates a differnt volume of sound the output was
different, so they were protected.
Exceptions of patents:

Section 100- Section 100 of IPA 1970 provides the power to the Government or any person
authorized by it to use the patented invention ‘for purposes of Government’.
Section 47(1)-
section 47(2)-
Section 47(3)-
Section 47( 4)-
Section 49-
Section 107-
 Copyright

Artistic, literary, cinematography, dramatic,

In India, Copyright Act, 1957

Creative and original- creative means application of a persons own intellctual mind
and original means not copied.

Modimum creativity- minimum amount of creativity. Every work must have

minimum amount of creativity must be there . But the parameters for it is different for
every country, which gives the judges power to decide.

Labour theory:

England- case law: Walter vs Lame

There was a reporter who used to go around the city to get news create from his own notes,
when the case was registered the question came up that whether he has any copyright
over his work. A doctrine of sweat and brow , the court decided that he has copyright over
his handwritten notes.

United States- case law: First Publication Vs transpot

First sale doctrine- when you buy a piece of property and use it for commercial purpose
then its not copyright infringment.

Case law: kirstaeng vs John willey and sons

This boy from thailand went to USA for further studies, so the university requirement
for them to buying refernce books. He was about to buy the books but he realised that it
was cheaper in his own country thailand. So he asked his cousin to send list of books for
some ofnhis friends also and then started selling the same books from thailand on ebay
and started making a lot of profit. The comapny filed a case against the boy for copyright
infringment and when it went to the court he won the case under the doctrine of first ssale
as he was buying the product from the company only so they were getting there profits.

Idea Expression Dichotomy- Copyright doesn’t protect the idea but patents protect idea.

Case law- RG Anand vs Delux Films

A movie derived from drama. The plaintiff said that they have depicted exactly to the
drama, so a copyright infringment case was filed , it was decided that the theme of the
movie and the drama was same but the events and the story was different so there was no
copyright infringment.

R. Madhavam Vs S.K Navi

Bradford vs sahara media entertainment

 Moral rights : moral rights was derived from the Word Droit Morale , this
concept was derived during the ancient times of France and Germany.
UDHR- universal declaration of human rights (AH 27(2)); India follows
the Berne conventions from where our domestic laws were created.

From Article

Section 57 of the ICA

Waiver of morale rights - giving up of morale rights is not available in India

but available in Europe.
Fair use + Fair dealing

IPR is basically about exclusive rights like monopolistic right over your work in
any intelleactual property. But sometimes doctrine of equity says that if any
invention,intelactual work benifits a public at large if its for educational purpose,
medical use then its not an infringment as its for public at large . Fair use is an
exception of copyright, where fair use of the work of the author by giving him
acknowledgement to his work. Fair use is a concept from uS and Fair dealing is a
concept of UK which is being followed in Indian copyright laws. The origin of fair
dealing is from England copyright laws from 1911, from the doctrine of equity.

The Factors of fair use are as follows :

1. Purpose and character of use
2. Nature of copyright work
3. Effect on potential market and value
4. Substainal portion of the work used

Fair use can be accepted for following purposes:

1. Research for educational purpose
2. Critical appreciation
3. Reporting of an event

Case law: Hubbard vs Vosper

Case law : delhi university photocopy case
In the present article’s case, a complaint had been filed against a photocopy shop and Delhi University
by Big publishing houses. The defendants (i.e. Rameshwari photocopy shop and Delhi University) we
accused by the plaintiffs that they regularly compile up the data from copyrighted books published
under their publication and provide it to the students in Delhi University. In 2012, publishers like
Oxford University Press, Cambridge University Press United Kingdom, Cambridge University Press
India Pvt. Ltd., Taylor & Francis Group, United Kingdom and Taylor & Francis Books India Pvt. Ltd
accused the above mentioned defendants for “infringing the copyrights of their publications material
by photocopying, reproduction and distribution on a large scale and circulating among the students
and teachers of the university”. The publishers sought to restrain the photocopy shop from supplying
photocopied course packs to students as it was violating the Indian Copyright Act, 1957 and asked fo
compensation amount of Rs.60,01200 and Rs.65000 for court fees.The whole scenario of this case wa
revolving around the topic whether copyright law was violated by the defendants or not. DELHI HIGH
COURT DECISION

In the case of “The Chancellor, Masters & Scholars of the University of Oxford & Ors. V. Rameshwari
Photocopy Services & Anr (DU photocopy case) the legal spat had begun in August 2012 when the
plaintiffs filed a suit in the Court making the allegation that the RPS and delhi university were
violating their copyrights by distributing the compilations of parts of books of their publication in th
form of course packs. In action to such complaint The Court had then issued an interim stay against
the RPS in October 2012.

Justice Rajiv Sahai End law of the Delhi High Court on September 16 2016, dismissed the suit by
observing “Copyright, especially in literary works, is thus not an inevitable, divine, or natural right
that confers on authors the absolute ownership of their creations”. The 94 pages landmark IP ruling
banked on the observation that Section 52(1)(i) of the Copyright Act is wider enough to include the
acts of photocopying and the creation of course packs by University for its students. The further cour
observed that “If Delhi University can photocopy, so can it’s agents (Rameshwari photocopy shop) or
any other photocopier, whether inside or outside the University”.

OVERALL ANALYSIS

All modern copyright system ensures the situation where copyright will not be treated as infringed by
the unauthorized reproduction of any copyrighted content. Under such cases, the judiciary or any oth
authoritative body in the interest of justice has to favour the other interest over the claim of the
copyright owner. On 1 June 2014 united kingdom has added three new statutory instruments into
their Copyright, Designs and Patents Act 1988. These statutory instruments updated the exceptions
and limitations to the rights of performers and copyright around Research, Education, Libraries and
Archives, Disability, and Public. Administration. The updated Research, Education, Libraries and
Archives regulation extends the copyright exception for students and libraries from just literary and
artistic works to all forms of copyright works. So every country is accepting the rule where there
copyrighted work may be used and reproduce for the welfare of education system and students. Gettin
the study material available in different book of big publication houses is not so easy. Numerous
difficulties may arise while doing this whether it could be financial or any other. So if a person want
to attain the higher education without any privation than he would rather prefer reproducing of the
relevant matter of his need through copying than purchasing of such expensive books.
Infringment of copyright :
Violation of copyrigt by coping somelse creative work for commercial
gain purpose. It has been defined in Indian Copyright Act under section
51.

section 51 tells you the ways you cause infringment:

1. Copying someone’s work without authorisation
2. Importing infringed copyright products
3. Providing platform for act of infringment
4. Reproduction of infringned products/ copies

Types of copyright infringment:

1. Primary or direct infringment - substainal part of the copyright has
been taken from the original work is known as substaintial copyright.
Casual connection is another part of primary infringment where a
casual connection is drawn from someone’s work how much is copied can
be drawn.

2. Secoundary or Indirect infringment - Helping the in copyright

infringment

Issues: 1) Plagarism
2) ownership
3) Derivated work

AI copyright infrngment or not:

Human generated - he has the copyright

AI generated- copyright with AI/creator/owner
AI assisted- Person giving instructions

USA, Japan and china have said that AI cannot be the owner of the genearted
work.
 Geographical Indication
Geographical Indication (GI) is a sign used on a product that originates from a
specific geographical location. The product must possess reputation and qualities of
the place of origin. GI are generally registered on products produced by rural,
marginal and indigenous communities over generations that have garnered
massive reputation at the international and national level due to some of its unique
qualities. GI tag gives the right to only those registered users the right to use the
product name, and prevents others from using the product name that does not meet
the standards prescribed.

Geographical Indications – Type of Products

GI tags are used on the following types of products.

Handicrafts – Examples would be Madhubani Paintings, Mysore Silk

Food items – Example would be Tirupati Laddu, Rasgulla.
Wine & Drinks – Example would be Champagne, Cognac of France; Scotch Whisky
of UK, Tequila of Mexico.
Industrial Products
Agricultural Products – Basmati Rice
Aspirants would find this topic very helpful while preparing for the IAS Exam.

Geographical Indications – Laws & Treaties: There are many laws and treaties
enacted by the World Intellectual Property Organisation (WIPO) and World Trade
Organisation (WTO) for the protection of Geographical Indications.

WIPO- 3 main Treaties enacted for protection of Geographical Indications under

WIPO are listed below.

Paris Convention
Madrid Agreement
Lisbon Agreement

WTO- The main Agreement under WTO for protection of Geographical Indications is
listed below.Trade Related Aspects of Intellectual Property Rights (TRIPS)
Agreement
Geographical Indications – Law passed in India

Government of India enacted Geographical Indications of Goods (Registration and

Protection) Act, 1999. This act came into force in September, 2003.
Geographical Indication Registered Products – India

As of March 2020, India had registered 361 Geographical Indication

Products.
Registration of GI’s began in the year 2004-05 after the above mentioned
law came into effect in 2003.
Darjeeling Tea of West Bengal was the first product to receive the GI tag in
India. Both the product and the logo received the GI tag.
In the first year apart from Darjeeling Tea, the other products to receive GI
tags were Aranmula Kannadi a Handicraft from Kerala, Pochampalli Ikat
a Handicraft from Telangana.
The latest 4 products to receive GI tags were Dindigul Locks, manufactured
product from Tamil Nadu, Kandangi Saree a handicraft of Tamil Nadu,
Srivilliputtur Palkova Food stuff of Tamil Nadu, and the 361st GI
product (the last product to receive GI Tag as of March 2020), is Kaji Nemu
an agricultural product of Assam.
Out of 361 GI products registered in India, 15 products are originating
from 9 different countries – Italy, France, UK, USA, Ireland, Mexico,
Thailand, Peru, Portugal.
Geographical Indications – Origin from Different States

There are some products which have its origins from different states, in
such a scenario the origin will be mentioned as India.
Phulkari Handicraft – Origin from Punjab, Haryana, Rajasthan.
Warli Painting – Maharashtra, Gujarat, Daman & Diu
Malabar Robusta Coffee – Kerala & Karnataka
Geographical Indications – States in India

Karnataka has the highest registered GI products in India. It has 42 GI

products.
Tamil Nadu has the 2nd highest GI registered products. It has 35 GI
products.
Maharashtra has the 3rd highest GI registered products. It has 30 GI
products.
Jharkhand has no GI’s registered.
Haryana and Punjab does not have GI products registered under its name
individually.